Archive for November, 2017

In today’s oral argument of Oil States, there was an exchange where the government’s representative was asked how frequently panels are enlarged by the Board. The answer given is shown below (with a chunk omitted for brevity):

15 CHIEF JUSTICE ROBERTS: Does it

16 comport to due process to change the

17 composition of the adjudicatory body halfway

18 through the proceeding?

19 MR. STEWART: This has been done on

20 three occasions. It’s been done at the

21 institution stage.

22 CHIEF JUSTICE ROBERTS: So I’ll

23 rephrase the question. Was it illegal under

24 those three occasions?

…

11 MR. STEWART: I — I don’t know how

12 the institution decisions came out. This has

13 not been done at the merits stage, if you will,

14 when patentability was actually being — being

15 determined. But our primary point would be

16 that if there’s a constitutional flaw in that

17 procedure, then a person who is actually harmed

18 by its use in a particular case -­

You can view the whole exchange in the transcript at pages 45-47 [here].

I came away from reading that exchange thinking that the government was saying that the PTO has only expanded IPR/CBM panels three times. If that was the intended message to the Court, then I think the government needs to double-check its figures. By the Chief Judge of the PTAB’s own slide presentation to PPAC on November 9, 2017 [Link], there have been four expanded panels in 2017 alone. Also, those do not include the expanded panels in IPR2013-00219 (Yissum), IPR2014-00508 (Target), IPR2014-00319 (Apple), and IPR2015-00762 (Zhongshan). If four expanded panels were used in 2017 alone, it appears that the PTO is using expanded panels with increasing frequency.

Moreover, the substantive use of an expanded panel in Ex parte Alappat cannot be overlooked. Granted, Alappat was pre-IPR days. However, the PTO showed in Alappat that it is certainly willing to use an expanded panel for a substantive issue rather than just procedural issues. For more on Alappat, see the Federal Circuit’s en banc opinion, particularly Judge Mayer’s (and Judge Michel’s) dissent, [here].

Ex parte Alappat was recounted in rather dramatic fashion in this FICPI publication [Link] at pages 98-99, where it was noted that the original three-member Board panel was expanded by adding the Commissioner of the USPTO, “Deputy Commissioner Comer (a person with no patent background or expertise), Assistant Commissioner Samuels (a trademark expert with no patent background) as well as the Chair and Vice-Chair of the Board.” The original three-member panel was subsequently out-voted 5-3.

Justice Kagan recently mentioned Justice Oliver Wendell Holmes’ stand-up desk, during the roundtable discussion celebrating Harvard Law School’s 200th birthday. You can see the roundtable below or at this [Link]. As an aficionado of stand-up desks, I was intrigued when she mentioned that Justice Holmes had used a stand-up desk. In fact, I understand that he wrote most of his opinions in his home office standing at his stand-up desk.

It was quite difficult to locate any pictures of this famous desk. Below are a few as well as a picture of Justice Holmes’ home study. The desk now resides in the office of the dean of the Harvard Law School.

That the government of the United States when it grants 358*358 letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt. The Constitution gives to Congress power “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” which could not be effected if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams, and submarine batteries to be attached to armed vessels. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments. It has been the general practice, when inventions have been made which are desirable for government use, either for the government to purchase them from the inventors, and use them as secrets of the proper department; or, if a patent is granted, to pay the patentee a fair compensation for their use. The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.

You might have noticed today two rather succinct opinions issued by the Federal Circuit. One wonders if that is in response to recent criticism of the Federal Circuit for issuing so many Rule 36 opinions in patent related appeals.

I thought it was interesting that one of the Federal Circuit’s judicial clerks recently moved on to become a Supreme Court Fellow. Namely, Judge O’Malley’s former clerk, Matthew Sipe, moved on to become a Supreme Court fellow assigned to the administrative office of the United States Courts. [Link]. You can listen to Judge O’Malley nominate Mr. Sipes for admission to the Federal Circuit Bar [here].

I have to admit that I had never heard the term “Supreme Court Fellow” before. It appears that there are only four appointed each year. At any rate, to the extent that the administrative office of the United States Courts has any influence on Congress, Mr. Sipes should be well-positioned to make the administrative office aware of the Federal Circuit’s plight and the possible need for Congress to propose legislation to create additional Federal Circuit judgeships to alleviate the Rule 36 problem.

The Supreme Court of Texas heard oral argument the other day in In re Andrew Silver, the patent agent privilege case. The issue has been characterized as follows:

“The issue in this mandamus to rescind a discovery order is whether Texas evidence rule 503 protects confidential communications between a patent applicant and his non-attorney patent agent authorized to practice law in federal patent proceedings.”

With Oil States coming up for oral argument in a few weeks, it is interesting that five of the current Justices of the Supreme Court were recently present to hear Justice Souter’s comments about the inestimable moral value of jurors.

Sovereign immunity for Indian nations is a hot topic these days, at least with respect to patent law. I posted about tribal immunity back in 2011. The post was focused on tribal immunity from patent infringement, rather than immunity from USPTO actions. You can view the post here: [Sovereign Immunity from Patent Infringement for Indian Tribes].

The CourtListener site has an interesting mapping feature that I stumbled upon today. I’m not entirely certain what it is showing me; but, some of you might enjoy experimenting with it. I mapped the line of cases from Aro I — in which the Supreme Court said there was not “gist” or “heart” of an invention — to Alice. This is the result I got: